Appeal No. 94-4409
Application 07/958,526
readily distinguishable over Uhl for three principal reasons.
First, appellants contend that Uhl fails to teach or make
obvious the use of a polymer prepared from a monomeric mixture
free of appreciable vinyl imidazole monomer. Appellants’
argument is predicated on the presumption that the claimed
language ?a polymer produced from a monomer composition
consisting essentially of? acts to exclude the vinyl imidazole
monomer component of Uhl’s polymer.
It is well settled that the claim language ?consisting
essentially of? limits the scope of a claimed element, e.g., a
composition, to the specified ingredients and those that do
not materially affect the basic and novel characteristics of
the composition. In re Herz, 537 F.2d 549, 551-52, 190 USPQ
461, 463 (CCPA 1976); Ex parte Davis, 80 USPQ 448, 450 (Bd.
App. 1948). When such language is used, e.g., as here,
defining a polymer produced from a monomer composition
?consisting essentially of?, the dispositive issue is whether
the introduction of a disclosed component, e.g., a monomer of
a prior art polymer, unrecited in the claimed polymer, would
materially change the characteristics of the claimed polymer
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